New Tools: TSDR Status and Title Export

You do trademark searches for lots of reasons – to clear a mark, to pull together a field of relevant marks to make a dilution argument, to pull together evidence for a TTAB proceeding or litigation, and to do transactional diligence.

If you want to refer to a US federal trademark registration in an Office Action response or in a TTAB proceeding, for example, to make the argument that a common term in your client’s mark and a prior registration is weak or diluted, see Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015), you cannot simply refer to the mark’s registration number, provide full details, or even provide a search result from a commercial vendor, see In re Hub Distrib., Inc., 218 USPQ 284, 285 (TTAB 1983): the Office or the Board will take no account of this information, even though they can quickly and easily verify the details using their own computer systems. Instead, the attorney must submit a “status and title” copy to make the third-party registration “of record” in the prosecution file or dispute proceeding. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988). Making registrations of record used to require a certified copy from the Office, which could take time to deliver and was (and remains) expensive, but now a TSDR status page for each record suffices. See TBMP § 1208.02.

If you are submitting a lot of evidence of third party registrations, this can still a time-consuming and unpleasant project. TM TKO now provide two super-fast, easy ways to export status and title copies.

To export from a search report or from a ThorCheck report, first, make sure that you have tagged the relevant records. Second, in the upper right of your report, you’ll see a “TSDR” export option.

TSDRexport1

Click the “TSDR” button and then click “Export.”

TSDRexport2

You will get a report summarizing the documents that were downloaded and letting you know about any errors, and have the option to download either a single combined PDF file or a ZIP file with each individual record in a separate file.

TSDRexport3

You can also export TSDR records directly from a standalone tool, available in the tool menu.

TSDRexportStandalone

We hope these new tools will help save you time and effort and provide better results to your clients!

New features! Tag, filter, sort, Word export, and more.

Over the past few weeks, TM TKO has rolled out a number of improvements, but we haven’t done a formal blog post about them yet!

Search, Watch, and ThorCheck

You can now interact with the mark result tables in search, watch, and ThorCheck report results with a full range of interactive tools:

  • tag key results;
  • filter by tagging status or live/dead status;
  • sort results by overall relevance (mark similarity + goods/services similarity) or just mark similarity (i.e. sort by the y-axis on the scatterplot);
  • filter using free-text search (to filter by class, goods, owner, etc.);
  • export to Word.

These features live in a toolbar at the top of your federal search results (in search and watch) or at the top of your ThorCheck report.

Table1

The image below shows the “Mark” similarity sort applied, bringing more-similar marks (albeit for much less related goods) to the forefront. Applying this sort is a quickest way to review searches where your look at the scatterplot suggests that the most concerning marks are out-of-class.

Table2

Free-text filtering opens up lots of possibilities, including filtering by goods:

goods

Filtering by class:

class

And filtering by owner:

owner

Export to Word lets you export your table of results (either the whole table or just tagged items) for further word processing, making it easy to incorporate results into an Office Action Response or just to match your preferred firm or practice group formatting.

Export

Search – Double-click to jump

Double-click on any point in the scatterplot to jump immediately to the full record in the table. Interacting with TM TKO’s unique graphical search analysis is now easier than ever.

Double click small

Search and Watch – Setup

We’ve added a checkbox to let you limit results to just the class(es) of the goods or services you entered. This helps where you are searching a very diluted term, or if the client only is willing to enforce in the class(es) where they own a registration.

In-class

What’s Next?

We hope you love all the new interactive features!

We are working on a solution that will generate TSDR status and title copies for you. It should be available both as a standalone tool and as an export option from search, watch, ThorCheck reports. It will be a great convenience when generating large amounts of evidence for an Office Action Response, Letter of Protest, or an adversarial proceeding at the TTAB or in federal court.

Keep your eyes out for updates here and on Twitter!

Tapping the Power of Office Action Search

The vast majority of “law” created in the trademark space is made via ex parte examination by the US Patent & Trademark Office. There have been over nine million Office Actions and Responses sent to and from the USPTO and trademark professionals, compared to only some 850 citable and 11,600 non-citable decisions from the Trademark Trial and Appeal Board, and a similarly small number of federal and state cases.

This June, TM TKO is revealing tools that will let you tap this huge body of Office Actions and responses. This series of blog posts will explore situations where the power of Office Action search can help you be a better lawyer.

Let’s consider a situation where your client, a craft brewery, has applied for the shape of a tap handle that it plans to use in bars. The design consists of a five-pointed star. The Examining Attorney has refused the mark as ornamental. How do you move forward?

Currently, you’re limited to poking around on TSDR in the hopes that you run across an application that raised a similar issue. With TM TKO, you can skip all the guesswork and focus right in on the most relevant prior Office Actions, and identify model responses. You can even limit the results to applications that eventually moved on to publication, indicating that they overcame the issues raised by the Examining Attorney.

OAbeertap
OAIssue1
OAPubOnly1
Here’s what we see – a set of results focused on exactly the sort of issue your client faces.

OAResults1

The first result is the prosecution history for the following tap design:

Tap1

In an Office Action issued in 2011, the USPTO preliminarily refused registration on the grounds that hexagonal designs were common or basic in the industry, and thus likely to be perceived as ornamental or otherwise non-distinctive. Counsel for the applicant, Charles Bacall of Verrill Dana, LLP, submitted a lengthy response arguing both that the design is inherently distinctive, differentiating it from the evidence provided by the Examining Attorney, and arguing in the alternative that the mark has acquired distinctiveness based on considerable sales figures and supporting affidavits from industry experts. It’s a perfect model to start thinking about and planning a response to your client’s Office Action. Despite the excellent arguments, the Examining Attorney would not yield, and the mark was registered on the Supplemental Register – also a useful data point in advising your client about the chances of success and the best path forward. A 2(f) claim was accepted in a subsequent filing for the same mark, and the mark is now protected on the Principal Register, Reg. No. 4,872,679.

Today, not only does the tap handle design a registered trademark that helps drinkers identify Allagash Brewing Company beers from across a bar, the company even sells tap handles from its online company store. You can buy one for your home pub at https://shop.allagash.com/collections/tap-handles.

TapHandles

Over the coming days, we will continue to explore more situations where Office Action and Office Action Response searches can help you do your best work for your trademark clients.

Pharma? Class 5 filings in 1Q 2017

International Class 5, which includes pharmaceuticals, is one of the most active classes for trademark applications at the USPTO. This blog post looks at some interesting Class 5 filing trends (and interesting marks) for applications filed in the first quarter of 2017.

The Most Common Class 5 Products

What types of products are applicants filing for? Most applications appear to be for easy-to-produce, lightly-regulated products like supplements and vitamins. It makes sense that there would be more of these than development-intensive, highly regulated pharmaceuticals, but the degree to which applications for these goods predominated was surprising.

Pharma_goods_spring_2017

How are Applicants Filing?

Most applications are filed based on actual use, followed by intent-to-use claims. Foreign priority or registration claims and Madrid Protocol applications lagged well behind.

Pharma_basis_spring_2017

Where are Applicants Located?

Together, applications from twenty of the largest foreign filers of Class 5 applications amounted to only about 800 applications, or about 16% of all 2017 applications in Class 5. Canada and Switzerland led the way, with China, Japan, Germany, and the UK well ahead of the rest of the pack.

Pharma_foreign_spring_2017

Some Fun Brand Names

Finding good pharmaceutical trademarks is tough work. There are a slew of pending applications and registrations, so clearance is tough, FDA name approval can be difficult, and marketing groups are torn between more suggestive names and completely coined marks. Here are a few of them we enjoyed.

Mark Comments
SLNDR Lose weight by removing vowels!
DANOCRINE Too remote for an effective demonstration
PUMP DIRT Checking the ingredient list…
SEXWAX !
OREGANOL

PROMATO

Combine for health-food lasagna?
DIAMOND FRESH As fresh as a billion year old chunk of carbon.
DRDOSE How is there not a rapper named this, you say? There is.
CRYPTOMUNE This will heal your animal, but if we tell you how, we’ll have to kill you.
NITRO BEETS I like this one.
GUT INSTINCT This too.
SAEF And effictive

 

Update: Losses in UDRP Complaints in 1Q 2017

Our last blog post on the UDRP, breaking down losses in 2016, was quite popular, so we’re doing an update for cases in the first quarter of 2017.

Data set

The data was manually coded from the National Arbitration Forum (“NAF”) searchable case database with decision dates from January to March 2017. Our previous research found similar outcomes for World Intellectual Property Organization (“WIPO”) proceedings, so this update focuses solely on NAF decisions.

Outcome Cases Percentage
Cancellation 0 0%
Transfer 342 92.7%
Denied 27 7.3%
Total 369 100%

Trends

We analyzed each victory for a respondent based on the grounds cited by the UDRP panel. Many decisions had more than one ground cited, so the total count of issues exceeded the raw number of decisions. One decision was not available online, and so counts as a denial but does not have grounds coded.

UDRP 1Q 2017

As in 2016, far and away the two most common causes of complainant’s losses were a failure to show any trademark rights that predated the domain name registration date (40.1% of decisions) or a failure to adequately demonstrate any trademark rights at all, particularly where the applicant claimed common-law rights (often in a fairly descriptive mark) without significant evidence of sales and advertising (14.9% of decisions).

One decision in particular was interesting: Wendy Murdoch, LLC v. Romero, FA 1706433 (Nat. Arb. Forum Jan. 13, 2017) (declining to transfer effortlessrider.com). The complainant had a trademark registration for the mark EFFORTLESS RIDER predating the domain name registration date, and used the domain name for competitive horseback-riding services, using the complainant’s mark prominently on the website. The panel had no problem finding that the domain name was confusingly similar to the mark nor that the use was a bad faith attempt to “create confusion for commercial gain,” but found that the respondent’s conducting business under EFFORTLESS RIDER – the complainant’s mark – insulated it under the “rights or legitimate interests” tab since the respondent was a “real business which offers real services” with an LLC of the same name (albeit created after the domain name was registered) and so was “commonly known by the at-issue domain name.”

This is a fairly perverse result. Under the logic, a seller of counterfeit Nike products that brands its entire site NIKE at the domain name nikeshoes4u.com would be immune to a UDRP, while a seller of counterfeit Nike products at a site titled SHOES at the domain name nikeshoes4u.com would, and so would a page of ads for NIKE knockoffs at the same domain. The first example is engaging in more conduct that the panel found to be bad faith, and which is explicitly conduct “for the purpose of disrupting the business of a competitor,” UDRP Par. 4(b)(iii), yet somehow creates a “right or legitimate interest.” Most panel decisions deal with the issue by noting that the domain registrant that uses “the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name.” Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003). The “commonly known as” exception usually to domain owners who use the domain for goods or services that are unrelated to the goods and services provided under the trademark owner’s prior mark. The Wendy Murdoch decision appears to be incorrect, and, if the line of reasoning spreads, potentially problematic for complainants, who will need to use the ACPA or another slower, more expensive enforcement option.

The Red Cross and Video Games

The Red Cross, Red Crescent, and Red Crystal symbols of the International Committee of the Red Cross are protected by the First, Third, and Fourth Geneva Conventions and several protocols thereto.

The Red Cross and Red Crescent emblems are intended to “provide protection for military medical services and relief workers in armed conflicts.”[1]

The United States implements this portion of the Geneva Conventions and Protocols via standalone legislation. The American Red Cross was protected via the Charter Act, passed in 1900 and available, as amended in 2007, at 18 U.S.C. §§ 706 – 706a., which gave it an exclusive right to use a red, Greek cross on a white field but grandfathered prior users, most prominently Johnson & Johnson on its first aid packs.[2]

JJ_aid

J&J actually filed a trademark infringement lawsuit against the American Red Cross when the ARC licensed use of the Red Cross emblem to several first aid and disaster preparedness kit manufacturers; the ARC prevailed on a key motion and the parties settled out all remaining issues.[3] They apparently now co-exist without issue.

arc_aid

Unlike typical trademark laws, the Charter Act does not look at whether the use makes consumer confusion likely: it simply bars any use other than by the American Red Cross (or, after the 2007 amendments, the ICRC and other national societies and their agents), with misdemeanor penalties including imprisonment available as remedies.[4]

The ICRC and its local affiliates seem to have taken a more aggressive approach recently to enforcement of these rights in the context of video games.[5] The Canadian Red Cross defended more aggressive enforcement efforts in a blog post arguing that “[m]isuse of this valued symbol distorts its meaning and its protective value for victims of conflict and the aid workers that assist them.”[6] This is essentially a dilution argument – even if no real-world confusion results, the distinctiveness of the symbol will be reduced, reducing the efficacy of the protection the Geneva symbols provide to relief personnel in the real world.

Games have tended to the Geneva symbols in one of two ways: to suggest “health,” and to refer to the Geneva symbols themselves. The first type of use is quite common; from the earliest first-person shooters, health packs often included red crosses to suggest first aid kits. An example from an early version of the game Doom is shown below.

doom

Other video games take a more realistic approach, trying to simulate war. The use of the Red Cross symbol in this sort of game, to depict the actual Red Cross in the game, is an expressive use and, in key circuit courts, it is analyzed under the Rogers v. Grimaldi test: use of a trademark in an expressive work is only infringing if “(1) the use of the mark has no artistic relevance to the underlying work whatsoever, or (2) it has some artistic relevance, but explicitly misleads as to the source or the content of the work.” In the context of the military game Call of Duty, a California court held that use of a military equipment company’s marks in-game received full protection under the First Amendment. Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., 74 F.Supp.3d 1134 (N.D. Cal. Nov. 24, 2014). There is a strong argument that, under traditional confusion or dilution analysis, this sort of in-game use would also be permissible.

Because the Red Cross symbol is not protected via traditional trademark laws, third-party use of the Red Cross symbol does not require the same test; neither confusion nor dilution are required, and the rights granted under the Act are ironclad as to junior users.

This “right” presumably is not absolute, no matter what the statute says; it’s almost impossible to envision a court granting relief to the Red Cross against a newspaper that runs a picture of the symbol or that uses the words “Red Cross” in connection with an investigative report, for example. The First Amendment concerns underlying Rogers are, in theory, no less important, though it seems unlikely that a court interpreting the Charter Act would treat them identically. How treaties and the protections of the Bill of Rights interact with each other is way beyond the scope of this little blog post, but the general understanding is that the individual protections of the Bill of Rights are retained without regard to other treaty obligations.[7]

Video game makers have certainly erred on the side of caution. In a March update, the multiplayer space simulator EVE Online updated the icon for a ship module to “comply with the Geneva Conventions,” presumably after a demand from the ICRC or a national affiliate.[8] The company is based in Iceland with operations in the UK and US, and may well have been subject to multiple legal regimes that may be less sensitive to concerns of the sort that impact US First Amendment decisions.

The old symbol: old_dc The new symbol: new_dc

The UK-designed indie game Prison Architect made similar changes, swapping red crosses on ambulances, shown below, for green.

Ambulance

Even the largest studios have been affected; in 2006, Microsoft’s Bungie updated its red-crossed health pack in its flagship Halo shooter for a red “H” symbol.[9]

Halo_packs

It will almost always be simpler for game designers to just push out a minor update to its graphics than to fight the issue in court, but the question is legally interesting and, if a large enough gaming company decides to push back, could make for some very interesting precedent.

 

 

[1] https://www.icrc.org/en/war-and-law/emblem

[2] See A. Barach, “One Cross – Two Cross – Red Cross – Blue Cross When Trademark and Health Care Collide” (Apr. 3, 2012), available at https://www.bradley.com/insights/publications/2012/04/one-cross–two-cross–red-cross–blue-cross-when__.

[3] Johnson & Johnson v. The American National Red Cross et al., Case No. 07-cv-07061 (S.D.N.Y. 2008) in the U.S. District Court for the Southern District of New York.

[4] Providing fines or imprisonment for anyone who “uses the emblem of the Greek red cross on a white ground, or any sign or insignia made or colored in imitation thereof or the words ‘Red Cross’ or ‘Geneva Cross’ or any combination of these words.” 18 U.S.C. § 706.

[5] ; https://www.youtube.com/watch?v=vOAq26xCefY&feature=youtu.be&t=6s provides a good, quick look at other examples.

[6] http://www.redcross.ca/about-us/about-the-canadian-red-cross/red-cross-emblem/it-may-just-be-a-game-to-you-but–it-means-the-world-to-us

[7] Compare Missouri v. Holland, 252 U.S. 416 (1920) with Reid v. Covert, 354 U.S. 1 (1957).

[8] https://community.eveonline.com/news/patch-notes/patch-notes-for-yc119.3-release.

[9] http://kotaku.com/video-games-arent-allowed-to-use-the-red-cross-symbol-1791265328.

What Didn’t Work: Unsuccessful UDRP Complaints in 2016

This article analyzes UDRP decisions in favor of the respondent domain owner in 2016. What factors sunk complainants and what fact patterns favored respondents?

Data set

The data was manually coded from the National Arbitration Forum (“NAF”) searchable case database, and taken from the aggregate reporting provided by the World Intellectual Property Organization (“WIPO”).

Both organizations have strikingly similar outcomes: roughly 90% of complaints succeeded in UDRP claims. Of those, a bit more than two percent of the WIPO decisions took the baffling step of canceling the domain name instead of seeking its transfer, putting the domains back in the general registration pool, where the complainant has no better chance than anyone else of getting the domain name. The one strategic reason to file for cancellation may be where the domain name included marks from both the complainant and a third party, where the complainant may not be able to secure transfer.

Outcome summaries are presented below in a table and as a pie chart.

  NAF WIPO
Outcome Cases Percentage Cases Percentage
Cancellation 3 0.20% 51 2.16%
Transfer 1300 87.72% 2133 90.23%
Denied 179 12.08% 179 7.57%
Total 1482 100% 2363 100%

 

NAF.png WIPO.png

Since the overall outcomes are so similar and time is not unlimited, we focused only on NAF results for a more detailed breakdown.

Trends

We analyzed each victory for a respondent based on the grounds cited by the UDRP panel. Many decisions had more than one ground cited, so the total count of issues exceeded the raw number of decisions. There were some clear patterns in the results, reviewed below.

Losses

The Complainant Lost a Prior UDRP or Court Proceeding

Complainants always lost where there was res judicata applied. It would seem self-evident that a prior loss in a UDRP proceeding or domain-related litigation would preclude winning a UDRP in the future, since the UDRP is primarily focused on the rights of the complainant and conduct of the respondent at the time of registration. Several complainants tried anyway and predictably failed.

The Complainant Does Not Have Priority

This was the second clear loser for complainants and was much more common than res judicata. Even though the UDRP requires evidence of bad faith registration and use to prevail, about 25% of the losing complainants filed complaints where the domain owner acquired the domain name in question before the complainant had trademark rights. UDRP decisions uniformly hold that registration in these circumstances cannot be in bad faith (even if use can) and also generally hold that the respondent has rights or legitimate interests in the domain name.

The typical fact pattern involved the complainant trying to capture the .com domain name corresponding to the mark where the domain name was registered before the complainant adopted or first sought to register its mark. The complainants quite reasonably want to get the domain name, often attempting (unsuccessfully) to purchase it from the owner, and then quite unreasonably used a UDRP proceeding to attempt to get their hands on it. Of course, the registration could not have been in “bad faith” where the complainant had no rights at the time of registration! This fact pattern is most likely to lead not only to a quick and firm rejection of the complainant’s claims, but also to a “reverse domain name hijacking” finding by the UDRP panel.

Where the domain name was registered prior to the complainant’s first trademark rights, but has been used in bad faith since (e.g. for pay-per-click ads for competitive goods or the like), the UDRP is just not the right tool. Complainants would have a perfectly good ACPA claim on the same facts. Whether these complainants were unaware of the differences in the claim or simply wanted to avoid the cost of federal court litigation is not clear, but filing a lawsuit isn’t wildly more expensive than filing a UDRP, and it’s easy to leverage a clearly winning ACPA claim into a quick settlement, where filing a clear-loser UDRP complaint is little better than burning money.

The Complainant Did Not Adequately Pleading (or Did Not Have) Common-Law Rights

Poorly-supported claims of common-law rights were another common loser, totaling roughly 20% of the UDRP losses by complainants. The typical fact pattern was a small or new business, or an individual claiming trademark rights in their name – often filing the complaint without a representative – filing a complaint that provided little more than a business name registration or a Facebook page as evidence of common-law rights. Many of these complaints, like those in the “priority” section above, sought to take high-value domain names, often those consisting solely of a combination of generic terms. To be clear, common-law claims in general were not problematic for complainants: common-law complaints backed by significant evidence of sales, advertising expenditures, and public recognition like press coverage had no more issues than registration-based complaints in providing rights under 4(a)(i).

The Complaint Targeted a Criticism Site

Complainants have largely figured out that the UDRP is not a great tool for trying to shut down critical sites that are not actively trying to confuse visitors. While complainants occasionally prevail – there is a bit of a split in the UDRP case law on the point – 5% of losses still related to criticism sites.

The Complaint Used the UDRP to Address a Business Dispute

About 15% of disputes failed because they fell outside the scope of the UDRP. Most were situations where the parties had some relationship, e.g. a former employee or officer of the complainant registered the domain name in their name while working for the complainant, and the complainant tried to use a UDRP claim to get it back. Panels tend to reject these claims as fundamentally contract or agency questions rather than questions within the scope of the UDRP.

The Complaint Addressed a Reseller

About 5% of the failed claims related to resellers, where the panel found that, between the nature of the domain name and the site, the registrant was attempting to operate a legitimate and non-confusing resale operation.

Other issues

About 10% of complaints also foundered on the “rights or legitimate interests” inquiry (largely cases where the complainant ran a site that was not competitive with the trademark owner’s business) or “bad faith” inquiry (generally where an offer to sell in response to a purchase inquiry from the domain owner was used as the sole proof of bad faith, and wasn’t enough, by itself, to show the registrant’s initial bad intent). Five of these involved successful claims that the registrant simply registered generic English terms that happened to match the complainant’s trademark, which was a generic English term for some goods but was used for unrelated goods. These defenses were most successful when the respondent had a huge portfolio of such domains, and didn’t appear to be targeting the complainant’s business (or the marks of other brand owners) in other ways. Interestingly, the respondent prevailed in a couple of proceedings even though an automated pay-per-click ad service put up ads competitive with the complainant; the panels refused to impute bad faith registration even though there was evidence of bad faith use. Those decisions were a bit of a departure from the norm.

A handful of proceedings were lost on other formalities grounds, most often where a complaint related to a domain name that included the marks of two companies, only one of whom was a party to the proceeding.

Conclusion

We hope this was a useful double-check for UDRP complainants prior to filing, and a useful guide to analyzing potential claim weaknesses for respondents in domain name dispute proceedings.